Griffin's Foods Limited

[2010] ATMO 51

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1276188 (29) - STRINGS- in the name of Griffin's Foods Limited.

Delegate:

Heath Wilson

Representation:

Decision on the Written Record

Decision:

2010 ATMO 51

Section 33: Ex parte – Marks are deceptively similar under section 44 of the Trade Marks Act 1995 (Cth) – Application rejected.

Background

1.     Griffin’s Foods Limited (“the applicant”) filed the trade mark application no. 1276188 “STRINGS” on 8 December 2008 for the following goods:

Class: 29 Health food bars and other foods in this class made from naturally prepared products; protein bars; snack foods in this class; pre-prepared meals in this class; dietary supplements in this class; preserved dried and cooked fruits, nuts and vegetables; jellies; jam; fruit preserves or vegetable preserves; fruit sauces; preserves; fruit based snack food; all the aforesaid not including dairy products, milk and milk products

2.     During the examination stage for this trade mark application, the examiner cited a number of trade marks that were determined to be deceptively similar to the applicant’s trade mark under the provisions of section 44 of the Act. Over the course of examination, the majority of these citations were withdrawn, either due to the ownership of those marks being assigned to the applicant or due to an amendment to the goods specification. However, the following trade mark registration no. 1245396 (“the cited trade mark”) was maintained as a citation:

Trade Mark	Filing Date	Class / Statement of Goods
6.06.08	Class: 29 Preserved, dried and cooked fruit; candied fruit; dehydrated fruit snacks; fruit-based snack food

3.     After the third examination report, the applicant applied to be heard under section 33(4) of the Act on the basis of the material on the written record. However, the applicant has not produced any additional evidence or submissions to support its argument. Accordingly, I will reconsider the section 44 matter in light of the applicant’s previous submissions on file.

4.     The applicant’s primary argument is that the trade marks in question are neither substantially identical nor deceptively similar. The secondary argument is that as other trade marks with earlier priority dates incorporating the word “String” have been assigned to the applicant: “…the applicant has earlier rights in the mark “STRING” than Au’some Inc.”

Reasons

5.     The relevant provisions of section 44 of the Act are:

44 Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

6.     In the first instance on a side-by-side comparison, the two trade marks are clearly not substantially identical under section 44 of the Act. Accordingly, in order to determine whether they are deceptively similar, it is necessary to consider the well-established test set out by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658):

the marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

7.     In accordance with the doctrine of imperfect recollection (as addressed in Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 at 108 per Luxmoore LJ), the memorable element between the two marks is the word “String” or its plural. The word “Strings” is the sole element in the applicant’s trade mark and the additional words in the cited trade mark are descriptive or laudatory of the goods in its specification. “Fruit” and “Sour” are words that clearly describe the characteristics of candied fruit or fruit based snacks. As a result, these terms may be discounted to a certain extent when comparing the trade marks. The difference in spelling of “Au’some” which is obviously intended to be pronounced as “Awesome” does create some difference between the trade marks. However, it is in essence a laudatory term despite the misspelling – and it may be overlooked considering its lack of prominence in the overall impression of the mark.

8.     The cited trade mark also features a device in the shape of a lemon encompassing the word “Sour”. In relation to composite trade marks, where a trade mark combines a device with a word, customers will more naturally refer to the word when ordering the product (American Trading & Shipping Co Ltd’s Appn (1936) 6 AOJP 78 (Reg); Sizzler Restaurants International Inc v Sabra International Pty Ltd (1990) 20 IPR 331 (Reg)).

9.     The above differences must be balanced with the visual appearance of the words in that trade mark. The nature of the goods is such that the visual comparison is paramount - the goods are likely to be available on supermarket or grocery shelves and may be purchased on impulse. As such, the differences between the marks would not be immediately obvious to the average consumer. The most important factor is the comparative size of the word “STRING,” which overwhelms the other words in the cited mark, such that it “strikes the eye and fixes itself in the recollection” (Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 at 162 (HL)) and is likely to be remembered by that essential feature.

10.   It is worth noting that the applicant went to some effort to convince the examiner that the word “STRINGS” was inherently capable of distinguishing its goods from those of other traders under the provisions of section 41 of the Act. The fact that it was found to be inherently distinctive in the applicant’s mark also reinforces the memorable nature of the word “String” over the other elements in that trade mark. In relation to the general question of deceptive similarity, it was observed in Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D) that:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes

11.   The goods in the cited application include “preserved, dried and cooked fruit” which is identical to “preserved dried and cooked fruits” in the applicant’s specification. In addition, “Fruit based snack food” in the specification of the cited mark encompasses the remainder of the goods claimed by the applicant. Consequently, I find that the goods contained in the specifications of the respective trade marks are similar (see section 14 of the Act). A consumer with knowledge of the applicant’s mark “Strings” is likely to view the cited trade mark as an extension of that brand and result in contextual confusion in Australian marketplace.  I therefore find that the trade marks are deceptively similar.

12.   The trade marks BELLIS FRU STRINGS (1041079) and STRINGZ (1149908) have now been assigned to the applicant. The applicant submits that as a result it now has earlier rights and equity in the word “STRING” which predates the rights of the owner of the cited mark. There are a number of problems with this proposition.

13.   Firstly, the assigned trade marks are not for the word “STRING” solus and cannot be said to claim a monopoly in that word. In addition, the BELLIS FRU STRINGS mark also has clear differences from the cited mark in this case. Secondly, the question of whether those trade marks are deceptively similar to “Au’some Fruit Sour String” (no. 1245396) has been addressed in the examination of that trade mark, and in British Sugar plc v James Robertson & Sons Ltd 196 RPC 281 (at 303) Jacob J commented:

…In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register.

14.   Regardless of the circumstances which led to the acceptance of that trade mark, I have determined the trade marks in the current matter to be deceptively similar under section 44. I make no conclusions on the outcome of the examination of the cited trade mark, and in any event in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579; [2000] FCA 177 Wilcox J observed that:

…although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

15.   The applicant has not provided any evidence of prior use, honest concurrent use or other circumstances to allow this trade mark to proceed to acceptance. I can find nothing further in the submissions from the applicant’s attorney that would persuade me that the current application should be accepted. The ground for rejection under section 44 has therefore been established.

Decision

33 Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

16.   As the trade marks are deceptively similar, I am satisfied that a ground for rejection under section 44 applies to this trade mark application. I therefore reject trade mark application no. 1276188: STRINGS under the provisions of section 33(3)(b) of the Act.

Heath Wilson

Hearing Officer

Trade Marks Hearings

28 June 2010